Registrar of Trademarks should classify Indian Goods & Services

Nov 15, 2018

15th November 2018

Considering enormity of litigations touching upon trademark infringement, Madras High Court has stated that it is high time that the Registrar of Trademark publishes alphabetical index as per Rule 20(2) of the Trademark Rules with class wise classification of the goods and services including that of the Indian origin.

The Court also held that while the expression “as far as may be” gives some discretion to the trademark Registrar, it is not plenary discretion wherein it can grant registration to any goods /services without mentioning the goods contained in a given class and without setting out how and why the goods are relatable to particular goods/services adumbrated in the registered class.

It held that Trademark Registry can classify goods and services in a particular class, but if it does not fit into any of the goods therein, it should mention which one of the specific goods/services it is relatable to and also set out how and why it is relatable.

The Court in the case of Aachi Spices & Foods v. Aachi Masala Foods, relying on the Supreme Court decision in Parle Products, found four distinctive features i.e., colour combination, rondel shape which forms part of the mark, arrangement of spices in a bowl and the yellow border, as deceptively and visually similar. It was also noted that the product ‘Kulambu chilli powder’ was same for both petitioner and the defendant.

The court continued the injunction as it was of prima facie view that domestic articles are purchased not only by their brand names, but also by the colour scheme and getup of the container in which the goods are marketed, and hence it would be unrealistic to focus attention to the brand name, ignoring the colour scheme and getup in the case of a passing-off action.